OPPOSITION No B 3 009 761

Fresenius Kabi AG, Else-Kröner-Str. 1, 61352 Bad Homburg v.d. H., Germany (opponent), represented by Miriam Vancraeyenest, Else-Kröner-Str. 1, 61352 Bad Homburg, Germany (employee representative)

a g a i n s t

Advance Medical Inc., 2711 Centerville Road, Suite 400, New Castle, Wilmington, United States of America (applicant), represented by Margaret Nunes da Silva, via S. Giacomo in Monte, 18/3° piano – int. 11, 34137 Trieste, Italy (professional representative).

On 07/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 009 761 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 310 022 ‘ADAVIUM’ (word mark), namely against all the goods and services in Classes 5, 10 and 44. The opposition is based on European Union trade mark registration No 11 388 519 ‘ADDAVEN’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

The goods on which the opposition is based are the following:

Class 5: Balanced mixtures of trace elements for use as a component of parenteral nutrition.

After the limitation by the applicant on 07/02/2019, the contested goods and services are the following:

Class 10: Medical apparatus, devices and equipment; diagnostic, examination and monitoring apparatus, including body composition and body fat monitors and electromedical instruments for slimming treatments, apparatus and equipment for reducing localised fat; apparatus and instruments for reducing underarm perspiration; diagnostic testing instruments for use in immunoassay procedure [medical]; automated diagnostic systems; plate washers, plate readers, plate incubators, automated equipment for ELISA methods, automated analysers for magnetised MEIA methods (magnetic microparticle enzyme immunoassay); automated equipment for immunofluorescence and chemiluminescence tests; biochemical analysers; haematology analysers; analysers for coagulometric, immunological and chromogenic tests; gas, electrolyte, glucose and lactate analysers and co-oximeters; ACT (activated clotting time) analysers; electrophoresis equipment for agarose gel methods; electrophoresis equipment for capillarity methods; localised fat reduction devices (laser lipolysis, liposuction with cryolipolysis technology); sweat reduction devices for armpits; apparatus using lasers, light and other radiation and energy emission sources, including microwaves, ultrasound and radio frequency for medical purposes, but not limited to the treatment of acne, scars, stretch marks, hair removal, pigment removal (natural and artificial), skin tightening, collagen stimulation and skin rejuvenation in general, and discrete and superficial vascular lesions on the face or lower limbs by means of cryo/sclerotherapy, lasers and related technologies; apparatus for use in vein puncture, instruments for intraluminal sclerosis of varicose veins; lasers, accessories, apparatus and equipment provided with systems and technologies for treating soft tissue, with or without contact, during surgical procedures, including through the use of endoscopes, introducers or catheters; lasers, accessories and apparatus provided with systems and technologies for incision, excision, vaporisation, ablation, haemostasis or coagulation of soft tissue in procedures directly or indirectly relating to general surgery, urology, gynaecology, otolaryngology, dermatology, ophthalmology, plastic surgery and vascular surgery; surgical apparatus and instruments; medical apparatus and instruments; dental apparatus and instruments and veterinary apparatus and instruments, artificial limbs; orthopaedic articles, including prostheses, orthoses for orthopaedics and other specialities; suture materials (disposable products); equipment (with or without laser technology) for use in ophthalmology, vascular surgery, urology; systems, disks and tapes for isolated immuno-specific research; goods for blood banks, including blood bags, homogenisers, transfusion equipment, sealing machines; scientific research apparatus and instruments for laboratories; machines for molecular biology tests; consumables for hospitals and laboratories (needles for medical and surgical purposes); tongue depressors; cotton swabs; hydrophilic guide wire to track catheters; medical syringes; cytology brushes; brushes for cleaning body cavities; tape cutters for medical purposes; silicone lace combined with a needle for use in the retraction of veins during surgery; scalpels; cannulae; incontinence sheets; medical furniture and bedding, equipment for moving patients; plastic materials for medical use in hospitals, surgical apparatus and instruments; video surgery equipment and apparatus, including rigid and electronic endoscopes for surgical use; automated blade cutters; bottles and materials for collecting, storing or transporting biological samples, diagnostic products and systems for in vitro use intended for clinical or industrial applications.

Class 44: Cosmetic and medical clinics; laboratory and diagnostic examinations; services for reducing underarm perspiration; performing diagnosis of diseases; dermatological services for treating skin conditions; providing laser therapy for treating medical conditions; laser removal of varicose veins; advice relating to immunology; medical analysis services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 10

The opponent’s goods in Class 5 are highly specialised products used in parenteral nutrition, which is a form of nutritional therapy for patients who cannot ingest food/drink and must receive it by some other method. Parenteral nutrition, or intravenous feeding, is a form of nutritional support that provides a person with nutrition via their veins. Nutrients, such as sugar, carbohydrates, proteins, lipids, electrolytes, and trace elements, are administered to patients in order to prevent and/or restore nutritional deficits.

Although the opponent’s balanced mixtures of trace elements for use as a component of parenteral nutrition are very different from food supplements that are administered orally and target the general public, they are essentially used to deliver nutrients to the human body and are not considered pharmaceutical preparations. This is because pharmaceutical preparations are medicinal substances, or a combination of substances, that are administered to patients either to restore, correct or modify physiological functions by exerting a pharmacological, immunological or metabolic action, or to make a medical diagnosis.

Therefore, they are considered dissimilar to any of the contested goods that cover various medical, surgical, dental and veterinary apparatus and instruments that are generally used for the diagnosis, treatment or prevention of human or animal diseases. The contested goods further cover artificial limbs, orthopaedic articles, suture materials, apparatus and instruments for laboratories, and medical furniture.

The goods have a different nature: the opponent’s goods are nutrients, while the contested goods are apparatus and instruments for hospitals, clinics, laboratories, etc. Moreover, even though the opponent’s goods are used when the patient is in a serious medical condition, they have a different purpose from that of the contested goods (provision of nutrients versus treatment of a disease or a physical condition). These specialised purposes imply the use of different technologies and know-how and, therefore, it is unlikely that the goods will be provided by the same producers. The distribution channels will be different, and the goods are not in competition.

As regards the complementarity that could potentially exist because some of the opponent’s goods, such as medical apparatus, devices and equipment, could be used for administering parenterally, the Opposition Division notes that complementarity is not usually conclusive on its own for finding similarity between goods and/or services. In the absence of any evidence to the contrary, the possible complementarity between the goods is not sufficient to conclude that the relevant public would believe that they are produced by the same undertaking.

Contested services in Class 44

It is even more difficult to establish any link between the opponent’s goods and the contested services in Class 44, which cover services offered by cosmetic and medical clinics, medical laboratories, and similar. In principle goods are tangible assets, whereas services are intangible assets. Therefore, they differ in their nature. From the consumers’ point of view, none of the goods and services fulfil a similar function. The goods and services at issue do not coincide in purpose (provision of nutrition versus treatment of a disease or a physical condition, or beauty treatments), nature, and especially the usual origin: they are offered by highly specialised but different undertakings. The relevant public does not expect a doctor (or a beautician) to develop and market such specialised goods. They differ in method of use and distribution channels. They are not in competition. Therefore, and contrary to the opponent’s arguments, the opponent’s goods and the contested services must be considered dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin MITURA

Anna BAKALARZ

Katarzyna ZANIECKA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.